Licensing IP International S.à.r.l. v. Andrei Ivanov
Claim Number: FA1910001868438
Complainant is Licensing IP International S.à.r.l. (“Complainant”), represented by ROBIC, LLP, Canada. Respondent is Andrei Ivanov (“Respondent”), Russian Federation.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <pornmd.icu>,<pornohub.bid>, <pornhubteen.top>,<redtube.bike>,<redtube.ink>,<redtube.vet>,<sextube.ink> and <tube8.wtf> (“Domain Names”), registered with NameCheap, Inc..
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Nicholas J.T. Smith as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 24, 2019; the Forum received payment on October 24, 2019.
On Oct 28, 2019, NameCheap, Inc. confirmed by e-mail to the Forum that the <pornmd.icu>,<pornohub.bid>,<pornhubteen.top>,<redtube.bike>, <redtube.ink>,<redtube.vet>,<sextube.ink>,<tube8.wtf> domain names are registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On November 5, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 25, 2019 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@pornmd.icu, postmaster@pornohub.bid, postmaster@pornhubteen.top, postmaster@redtube.bike, postmaster@redtube.ink, postmaster@redtube.vet, postmaster@sextube.ink, postmaster@tube8.wtf. Also on November 5, 2019, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no formal response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On December 2, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Nicholas J.T. Smith as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the Domain Names be transferred from Respondent to Complainant.
A. Complainant
Complainant, Licensing IP International S.à.r.l., is a corporation that does business in the online adult entertainment market. Complainant has rights in the PORNMD, PORNHUB, REDTUBE, SEXTUBE, and TUBE8 marks (“Complainant’s Marks”) based upon the registration with the United States Patent and Trademark Office (“USPTO”) (e.g., PORNMD - Reg. No. 4,484,877, registered Feb. 18, 2014, PORNHUB - Reg. No. 4,220,491, registered Oct. 9, 2012, REDTUBE - Reg. No. 3,843,119, registered Aug. 31, 2010, SEXTUBE - Reg. No. 3,350,922, registered Dec. 11, 2007, TUBE8 - Reg. No. 4,220,492, Oct. 9, 2012). Respondent has registered eight domain names <pornmd.icu>, <pornohub.bid>, <pornhubteen.top>, <redtube.bike>, <redtube.ink>, <redtube.vet>, <sextube.ink> and <tube8.wtf> that are confusingly similar to Complainant’s Marks because the Domain Names each entirely incorporate one of Complainant’s Marks and simply add a generic top-level domain (“gTLD”) to the mark. In addition, <pornhubteen.top> adds the generic or descriptive term “teen”, and <pornohub.bid> adds the letter “o”.
Respondent does not have rights or legitimate interests in the Domain Names. Respondent is not licensed or authorized to use Complainant’s Marks and is not commonly known by the Domain Names. Additionally, Respondent does not use the Domain Names for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the Domain Names to redirect users to Respondent’s website that directly competes with Complainant.
Respondent registered and uses the Domain Names in bad faith. Respondent has engaged in a pattern of bad faith registration and use. In addition, Respondent is attempting to disrupt Complainant’s business and attract Internet users to its competing website for commercial gain. Finally, Respondent had actual knowledge or constructive notice of Complainant’s Marks prior to registering the Domain Names.
B. Respondent
Respondent failed to submit a formal Response in this proceeding. Rather Respondent sent two e-mails on December 2, 2019, asserting that the proceeding had been resolved in the Respondent’s favor, noting the decision in Licensing IP International S.à r.l. v. REDACTED PRIVACY et al., FA1904001841075 which concerned the Domain Names and several additional domain names.
That decision concerned a complaint made under the Uniform Rapid Suspension System (“URS”), in which the Examiner found that the Complainant had not demonstrated the elements required under the URS by a standard of clear and convincing evidence.
Paragraph 4.22 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition makes it clear that a decision under the URS does not cause prejudice to a UDRP proceeding and a UDRP panel is not bound by that determination. The Panel extracts the relevant paragraph below.
“UDRP panels have noted that a URS case shall not cause prejudice in a UDRP proceeding. This stems in part from the fact that, aside from not being specifically linked together by ICANN in procedural terms, the URS and UDRP are distinct dispute resolution mechanisms. While the UDRP operates on an “on balance” standard, the burden of proof on the more limited pleadings provided for under the URS requires that the complainant demonstrate by “clear and convincing evidence” that the particular case facts merit a determination in its favor. The URS only provides for a proportionally appropriate remedy, namely the temporary domain name suspension (instead of the transfer provided for under the UDRP). Importantly, URS determinations rarely provide insight into the particular legal reasoning applied. Thus, while a UDRP panel should be made aware of a URS determination, it is not bound by that determination.”
Complainant holds trademark rights for the Complainant’s Marks. Each of the Domain Names is confusingly similar to one of the Complainant’s Marks. Complainant has established that Respondent lacks rights or legitimate interests in the Domain Names and that Respondent registered and has used the Domain Names in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a formal response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant asserts rights in the Complainant’s Marks marks based upon its registrations of the Complainant’s Marks with the USPTO. Registration with the USPTO can sufficiently establish rights in a mark under Policy ¶ 4(a)(i). See Thermo Electron Corp. v. Xu, FA 713851 (Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a national trademark authority).
The Panel finds that each of the domain names <pornmd.icu>, <redtube.bike>,<redtube.ink>,<redtube.vet>,<sextube.ink> and <tube8.wtf> are identical to the corresponding Complainant’s Mark as they wholly incorporate the corresponding Complainant’s Mark and add a gTLD. See Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because the domain name syntax requires TLDs.”).
The Panel finds that the domain names <pornohub.bid> and <pornhubteen.top> are confusingly similar to the PORNHUB mark as they wholly incorporate Complainant’s PORNHUB mark and add the generic term “teen” or the letter “o” along with a gTLD. The addition of a descriptive word and a TLD to a mark fails to sufficiently distinguish a disputed domain name for the purposes of Policy ¶ 4(a)(i). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i)). Additionally the addition of a single letter to a mark does not negate confusing similarity between the disputed domain name and that mark. See Google, Inc. v. DktBot.org, FA 286993 (Forum Aug. 4, 2004) (“The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶ 4(a)(i).”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Names. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the Domain Names under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) and AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”). The Panel holds that Complainant has made out a prima facie case.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Names as Respondent is not commonly known by the Domain Names, nor has Complainant authorized Respondent to use the Complainant’s Marks. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant. WHOIS information can help support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). The WHOIS lists “Andrei Ivanov” as the registrant of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation or authorization between the parties, the Panel finds that Respondent is not commonly known by the Domain Names in accordance with Policy ¶ 4(c)(ii).
The Domain Names are used to redirect visitors to a website at www.pornvida.com, where Respondent offers adult videos in direct competition with Complainant. The use of a series of domain names to redirect to a competing website does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use of the name under Policy ¶¶ 4(c)(i) or (iii). See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). In particular, the fact that both Complainant and Respondent offer services colloquially described as ‘porn’ does not mean that Respondent’s use of domain names that are identical or confusingly similar to Complainant’s Marks to redirect to a competing service is a bona fide offering; the Domain Names are not used in a descriptive manner to refer to ‘porn’; rather they are clearly being used as a (misleading) identifier of source.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds on the balance of probabilities that, at the time of registration of the Domain Names (between November 20, 2017 and January 23, 2019). Respondent had actual knowledge of Complainant’s Marks. It is implausible for a competitor of the Complainant to register 8 different domain names corresponding with 5 separate marks owned by the Complainant over a 14 month period without that party having knowledge of the Complainant. In the absence of rights or legitimate interests this demonstrates registration in bad faith under Policy ¶ 4(a)(iii).
The Panel finds that Respondent has engaged in a pattern of conduct of registering domain names to prevent the Complainant, being the owner of the Complainant’s Marks, from reflecting those marks in the corresponding domain names. See Microsoft Corporation and Skype v. zhong biao zhang / Unknown company / zhong zhang, FA1401001538218 (Forum Feb. 20, 2014) (holding that the respondent’s registration of three domain names incorporating variants of the complainant’s SKYPE mark reflected a pattern of bad faith registration under Policy ¶ 4(b)(ii)); Philip Morris USA Inc. v. RapidClic / VAUCLIN Olivier, FA1309001520008 (Forum Nov. 7, 2013) (finding that the respondent’s registration of multiple infringing domain names indicates a pattern of bad faith registration and use under Policy ¶ 4(b)(ii)). Respondent has, without alternative explanation, registered 8 domain names that reproduce 5 of the Complainant’s Marks and uses those Domain Names to redirect visitors to its competing website. This constitutes bad faith registration and use under Policy ¶¶ 4(b)(ii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <pornmd.icu>, <pornohub.bid>, <pornhubteen.top>, <redtube.bike>,<redtube.ink>, <redtube.vet>, <sextube.ink> and <tube8.wtf> domain names be TRANSFERRED from Respondent to Complainant.
Nicholas J.T. Smith, Panelist
Dated: December 4, 2019
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